To serve the goal of protecting the claimed invention in practice, the patent should be “strong”. A strong patent not only meets the patentability criteria and is able to sustain invalidation attacks; it should be broad enough to be successfully enforced against eventual infringements.
Strong patents form the cornerstone of a successful innovative company’s intellectual property assets.
Sojuzpatent’s attorneys have vast experience in drafting strong patents ab initio and are able to meet a client’s demands in any technical field, including aeronautical engineering, aerospace engineering, agriculture, automotive, biotechnology, cleantech, construction, defense, electronics, food, genetic engineering, immunology, IT/Software, materials, manufacturing, mechanical/engineering, medical devices, nanotechnology, the oil & gas industry, optical technologies, pharmaceuticals, semiconductors, and telecommunications.
Do I have any protection after publication of a Russian patent application and before the grant of the patent?
As in most patent jurisdictions, an applicant receives in Russia provisional legal protection of his or her rights during the period between the publication of the patent application and the publication of the granted patent (Article 1392 of the Russian Civil Code).
Any third party having used the invention during the said period shall pay to the patent holder a reasonable compensation. If the parties do not agree about the amount of the compensation, the same should be defined by the court. It is important to understand that the right holder can bring a legal action against such a third party only after the registration and publication of the patent.
What are the consequences of failure to work a patent in Russia?
In Russia, no requirement is set for obligatory use of a granted patent; therefore, non-use of a patent does not endanger the patent holder’s exclusive right.
However, there is a provision in the Civil Code aimed at preventing a situation when failure to use a patent entails a shortage of some important products on the market.
In case an invention is not worked during four years after the grant, and if this affects the supply of a product or service, a court can obligate the patent owner to issue a compulsory license to the plaintiff. The price for the compulsory license is to be set in accordance with market conditions.
Any person is entitled to file a lawsuit requesting a compulsory license in case they have approached the patent holder and have been refused a license.
To protect one’s technical solution, when is it more appropriate to file an application for an invention, and when for a utility model?
This decision should be made on a case-by-case basis, depending on the subject matter and goals of patenting, as well as taking into account the specifics provided in the table below.
|Object of protection||Product (in particular device, substance, strain of microorganism, cell culture of plants or animals) or method||Device|
|Patentability criteria||Novelty, inventive step, industrial applicability||Novelty, industrial applicability|
|Term of protection||20 years (with a possible extension up to 5 years for inventions relating to such products as a drug, pesticide or agrochemical product, if their use requires a statutory authorization and more than five years have lapsed from the filing date of the patent application to the date of obtaining the first authorization)||10 years|
|Approximate time to obtain a patent||24 – 36 months||6 - 12 months|
As one can see from the table, only a device can be protected as a utility model. At the same time, invention patents grant protection to devices, chemical substances, strains of microorganisms, cell cultures of plants or animals, as well as methods. For example, if there is a need to obtain patent protection for a chemical substance, one should file an application for the invention rather than for the utility model.
As far as a device is concerned, we should point out that one can obtain a utility model patent easier than an invention patent, since the utility model is not required to have the inventive step (unlike the invention). Thus, in order to get a utility model patent, one could take two previously known devices and merely combine them, also proving novelty and industrial applicability. An inventive step is not required in this case.
However, the extent of legal protection of an invention is somewhat broader than the one of a utility model because the assessment of infringement of IP rights includes equivalents doctrine.
When choosing between a utility model and an invention patent, one should also consider the risk of patent invalidation. Since inventions have to satisfy the additional patentability requirement of an inventive step (obviousness), possible invalidation actions can have additional grounds – lack of an inventive step. Therefore, in some cases, utility model patents can be considered as potentially more stable.
Which countries are covered by a Eurasian patent?
Currently: Armenia, Azerbaijan, Belarus, Kazakhstan, Kyrgyzstan, Russia, Tajikistan, and Turkmenistan are members of the Eurasian Patent Convention. Moldova left the Convention on February 27, 2012, but the patents registered on the basis of applications filed before that date, are valid.
Can the PCT national stage start before the expiration of the time limit?
In both Russian and Eurasian Patent Offices, the processing of a PCT national (regional) stage application may start before the expiration of the 31-month time limit in case the applicant makes an express request to the Patent Office.
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